Posted
by
CmdrTaco
on Tuesday September 13, 2005 @08:36AM
from the stuff-you-can't-make-up dept.

wellington writes "Google is facing a renewed threat of legal action from a company that claims to own the intellectual property rights to its GMail e-mail service. Independent International Investment Research, a British company that specialises in research and has several leading City investment banks as clients, argues that it launched "G-Mail web based email" in May 2002."

According to the US Patent and Trademark Office, the "GMAIL" mark has been assigned to Google, who applied for the mark on April 2nd, 2004. The Trustees of the "Smith Trust", Shane Smith and Karen Griffith, applied for the same "GMAIL" trademark on April 3rd, 2004, one day after Google Inc. The "Smith Trust" has not been assigned the trademark by the US PTO, and the latest rejection of their application was June 11th, 2005.

Here [patent.gov.uk] is the UK trademark website. If you search it, you'll find the earliest application is from Google, Inc. on April 14th, 2004. Karen Griffith applied on October 4th, 2004, almost half a year later.

So there you go. In the USA, Google applied first, and with an earlier date of first use to boot. Google quickly followed up and applied in the UK as well. These guys, supposedly BASED in the UK, didn't bother for another 6 months. Further, their only reference in their UK application was to their US application. If that application was rejected, the UK one will be too, I would imagine.

The German telecom already owns the T. They sued everybody who had a T in their trademark or web adress. That includes owners of domains such as "t-beutel.de" ("tea-bag.de"). They also have a trademark on the colour magenta (yes, the M in CMYK) and have been known to sue people using it in advertisements (a common practice for magazines where you pay per colour used).

This isn't patent law, this is trademark law. The existance of a word prior to it's use as a trademark does not exclude it from being a trademark. Otherwise Mickey Mouse would have never been trademarkable. After all, mice have existed for centuries.

A trademark is a mark which the use of has become associated with your business. It can almost be anything, witness Microsoft's trademark on Windows.

The article makes it seem like this company's "GMailTM web-based email" service doesn't even exist. Phrases like: "The idea was that", "it launched "G-MailTM web based email" in May 2002", etc. all talk of this 'service' in the past tense, there's no speak of whether or not this product still actually is still in existence. Granted, they still own the rights to the trademark, and one of the stipulations of owning a trademark is that you police yours. Still, why would a company with a deceased (presumably, because let's face it..this company would be suing Google whether or not they still actually maintained the service) product/service sue a company, instead of merely not policing their TM, and releasing it "back into the wild"?

Oh, that's right. Money. I'm guessing it went like this:

Trademark name.

Run mediocre project into the ground.

Begin talks with Google to try to get them to give you money, since you still own the trademark to a product that does not still exist.

Fail.

Send out press release to major news media, stating that you're going to sue Google, because there's no such thing as bad press.

Also, I'm kind of miffed that this keeps getting called an "intellectual property struggle". G'fuh? I remember back in the old days, we used to call them "trademark disputes". I wasn't aware that changing the first letter of a well-known contraction for "electronic mail" was a rigorous intellectual task. If that's your claim to fame, you're an idiot.

Yes they can. They just need the right law firm. Google has a lot of money and everybody wants a piece of it. The IP hoarders deserve to be constantly at each other's throats, IMO. If you live by the sword, you will perish by the sword. Well, you will at least get hurt. Didn't Oracle have to pay 100 million US dollars or so to settle an IP-related suit just recently? Companies are like kids fighting over who the toys belong to. When will they wake up and grow up? It is

I am John William Babbittworth, of the law firm Thompson, Richards, Williamson, Heresford, Babbittworth, Jones and Spencer law firm.
We represent the interests of Independent International Investment Research, which has exclusive trademark rights to all words beginning by the letter "G"...

The IP hoarders deserve to be constantly at each other's throats, IMO.

The IP in question is a trademark (awful journalism banging on about 'owning the intellectual property rights to the GMail service'). I take it you think Linus is an IP hoarder too, because Linux is trademarked.

This seems like a perfectly straightforward trademark dispute to me. No glaring flaws in this area of intellectual property law that I can see. This kind of dispute does not deserve to be lumped in with the ridiculous patents and copyright excesses we've seen.

It's not about a patent. It's about a trademark. Which they're clearly infringing, at least in the UK. That's what happens when you trump things up, and call trademark disputes "Intellectual Property battles".

you kidding me? those AdSense things generate what people in the biz refer to as a shitload of cash simply due to the sheer volume of people seeing them (and it helps that they're targeted to what your mail's about). sure, it's a free service but it's not like they're losing money on it or something.

You joke, but IIR is already estimating how much their should receive for the mark. Looking at their website: www.iirgroup.com [iirgroup.com] and navigating through their press releases, you can find this one [iirgroup.com] entitled GmailTM web-based email trade mark valuation report. Guess how much they are estimating? Directly from the PDF: $48million to $64million. How did they arive at this number? Well, Google's annualized revenues are $3,224million. And they pulled 0.5% out of the air as a "conservative" royalty rate (because we know that all of Google's revenues are due to ads placed in GMail), which gives us about $16million. And then they feel they deserve 3x to 4x that amount, and tada! We arrive at $48million to $64million. Now that is the most solid reasoning I have ever seen.

... the summary is correct, they're claiming:"IIR, led by chairman and chief executive Shane Smith, accused the search engine of "failing to respect the intellectual property rights of others" and said it had no alternative but to pursue an expensive legal action that it admitted it could ill afford."

"I feel it is up to me as the founder and the major shareholder. We're not going to sit on the sidelines while a company uses our intellectual property rights," he said. "We're confident that we have the fundin

But "Intellectual Property" is not a term you can use intelligently, only as a way to further the company propaganda-machine. This example clearly shows it is not suitable for intelligent readership. I heard this from RMS last time he visited Norway.

And what you've just said is:Trademarks, copyrights, and patents are the sorts of things designated by the general classification of intellectual property--but intellectual property doesn't exist!When people talk about intellectual property, they are talking about trademarks, copyrights, patents, or the ideas or information covered by same (books, inventions, company and product names and logos). Inasmuch as a piece of intellectual property does not exist, neither does any idea or piece of information. None

On the off chance that you're serious in your ignorance, "girding [one's] loins" is a turn of phrase stating that one is preparing for action with the allusion to battle. It's kind of the equivalent of putting on a jock-strap.

In a broad sense, it *is* right. The only problem is that it it misleading. When I first went through the summary, I though GMail was using some of their actual code... you see... intellectual property.You maybe would want to say Intellectual Property if you are talking about trademarks, patents and/or copyright in, say, an article or a paper. But claiming you have intellectual property when you claim rights to a trademark is misleading. It's like claiming someone did "considerable economic damage" to you w

Sounds like they have a legitimate claim here... They did launch a web-based email service called GMail well before Google. The fact that they've been negotiating with Google for the past 15 months would indicate that they also brought their claim to Google early on. I wonder why Google hasn't just paid them to license the name? Wouldn't they rather use some of their excess money reserves than risk a tarnished name?

IIIR has no website which can be located by Google, Yahoo, or any other search engine that I've used.

All that comes up are some investor reports like OneSource [onesourceexpress.com], which reports them as having a whole seven employees.

Trademarks are not automatically international, and the mere presence of the "G" before "Mail" is not a trademark. Trademarks are either specific spellings (with/without hyphens), logos, icons, color combinations, etc.

You don't think that GMail and G-Mail are confusingly similar?
Especially given that there's still no consensus [alt-usage-english.org] as to whether to refer to electronic mail as "email" or "e-mail"...

Actually there service is G-Mail not GMail.And the service is specific to the currency trading business. There is almost no overlap and the names are different. Yes it is by one character but when you only have five to start with that is significant.Frankly if the trademarks are not identical then I would say no case. But then Microsoft somehow has convinced people that they invented using "windows" in a GUI. I wonder when they will sue X-Windows?After all X-Windows is a lot closer to Windows than Lindows w

So, if I were to come out with a game system called the "X-box" this would be entirely okay by your interpretation of trademark law? Because Microsoft's system is called the "Xbox", which is obviously entirely different, right?

Get real, trademark law protects your trademark from all other marks which are mistakenly similar, not just identical.

Look, if you keep using the catch-all phrase "Intellectual Property" to cover distinct ideas, no one will ever get smart about the differences. This is about a trade mark "GMail" -- only the *name* is the important thing here.

Yes, this 'IP' nonsense is invariably a sign of someone that either doesn't understand what they're talking about, or doesn't want YOU to understand what they're talking about (or possibly both.)

As to them registering their trademark first, that's true. However, that's not the end of the story. The trademarks are not identical - googles is 'Gmail' while theirs is 'G-Mail.' Gmail is a rather obvious abbreviation for 'Google Mail.' Their trademark is apparently UK only, and it doesn't sound like they've don

try marketing your Micro-soft operating system and see how long that "but we had a hyphen!" argument holds up.

You might be able to get away with it if you use significantly different styling for the logos. e.g. Microcenter could cause brand confusion if they styled their brands in such a way as to make the consumer believe that they were a Microsoft company.

However, a judge would probably find that you were attempting to cause brand confusion based on the shear popularity of the Microsoft mark.

In this case, however, my understanding is that Google didn't learn of the mark until a month after they launched their service. In addition, the two services operate in different markets. So Google has a strong case in that the two services are unlikely to be confused, and that Google has been using the mark in good faith.

Doesn't matter. The Firebird database is a niche item, but they'd still have won a trademark case with Mozilla Firebird.

I wish people would stop repeating nonsense like this. As with many legal threats, there was no court case. Since there was no court case, there was no determination of brand validity. Since there was no determination of brand validity, there is no legal precident steming from the issue.

The most that could come out of it is that if Firebird (database) ever went to court over their name again, they could claim that Mozilla decided to settle because they believed in the validity of Firebird's claims. (In reality Mozilla just didn't want any trouble, so they picked a truely unique name.)

Wow, yet another vague summary, that can definitely be misleading. Having first read the summary, I thought it was about a company claiming to have created the code and/or services of Gmail only to have google steal it. But no, the company is merely sueing for trademark infringement. Way to go slashdot! The word "TRADEMARK" could have been mentioned somewhere in the article, would have cleared it up a tiny bit. But I guess Slashdot gets more pageviews (and ad views) by confusing its readers.

Easy... with you palm facing upwards, reach into the vagina with one or two fingers (3 or 4 after she's given birth to 3 kids). Now curl your fingers towards you in a "come here" motion. Woopee! You've found the G-Spot. What you're looking for is the continuation of the clit once it enters the body. Wanna be hardcore? Suck on her clit who=ile performing this "come here" motion and she'll be screaming your name in no time.

The penis is a terrible tool to stimulate the G-Spot with. There are certain positions in which penile penetration can stimulate the G-Spot, but many women find them uncomfortable. So get in there with those fingers!

The company does not 'claim to own the intellectual property to GMail'. It has a trademark claim. This is completely different and unrelated to any copyright interest, patent held, or trade secret. Lumping them all together as 'intellectual property' which can then be 'infringed' in some vague way just muddies the issue.

He [Mr. Smith] said he was "reluctantly" considering taking legal action against Google, which could involve his family trust selling shares in the group to fund the claim.

"I feel it is up to me as the founder and the major shareholder. We're not going to sit on the sidelines while a company uses our intellectual property rights," he said. "We're confident that we have the funding available to us and we're girding our loins," he said.

As much as they may have a case, I always find the "we don't want to, but they are forcing us" argument funny. Not because of the company itself, but because I can imagine some IP lawyers saying, "Yesss! They are being forccced to! Hisss!" as their forked tongues flick from their mouths and they rub thier greedy paws together with reptilian glint in their eyes.

As much as they may have a case, I always find the "we don't want to, but they are forcing us" argument funny. Not because of the company itself, but because I can imagine some IP lawyers saying, "Yesss! They are being forccced to! Hisss!" as their forked tongues flick from their mouths and they rub thier greedy paws together with reptilian glint in their eyes.

One of the problems with owning a trademark is that you must defend it or lose it. Unlike copyright, trademarks can be invalidated in court if they

As much as they may have a case, I always find the "we don't want to, but they are forcing us" argument funny. Not because of the company itself, but because I can imagine some IP lawyers saying, "Yesss! They are being forccced to! Hisss!" as their forked tongues flick from their mouths and they rub thier greedy paws together with reptilian glint in their eyes.

What reason did this company have for naming it "gmail?" Where's the "G" in their company?You can't copyright a letter. Perhaps TFA was in error; it certainly wasn't very clear.

I wish people would stop talking about "IP." Intelectual "property" is not property. If you're talking about a copyright infringement, don't say "my IP rights were violated," say "my copyright was infringed.

I'm talking to those of you who are journalists or think you are. Er, wasn't there a/. article about how journalists are ignora

Google, the internet search engine, is facing a renewed threat of legal action from a company that claims to own the intellectual property rights to its GMail e-mail service.

Is it just me, or is there something particularly novel and innovative about a browser-based e-mail service? Or, is there something particularly stupid about a company laying claims to this idea as its "intellectual property?" None of the concepts are particularly new.

If these folks had 'gmail' as a legitimate trademark for an actual product or service (not vaporware), why then did they not register the domain names for their alleged trademark? Registering "gmail" in every top-level domain for 10 years would have cost them less than $1000. If they actually had a legitimate business plan to launch a "gmail" service, securing the domains would have been the FIRST thing they would have done. Failing to register the domains, while trademarking a non-existant "service" smel

Google could just trade under the "Google Mail" name, and advertise the mail.google.com addresses, but since they own gmail.com and are using it the gmail.com addresses could still continue to work, and jut forward to a comparable mail.google.com addresses. There would not have to be any distruption of service to the user, but the name would change.

Unless g-mail can win the gmail.com name, that is another story. Right now they are just threatening to sue for trademark infringement.

... this was a german company, with its product named "G-Mail, und die Post geht richtig ab" [gemail.de] (roughly translated "G-Mail, and the mail really gets going"). They also tried to sue people selling GMail invitations on eBay [heise.de]. a legal case is open in Germany, and GMail is obliged by a court order not to give @gmail.com-adresses to german users - those ones get @googlemail.com adresses instead [which also work with gmail, but this is not yet well-documented.])

The fact that the british and the german trademarks are so similar to each other makes me think... does anyone know if there are connections between those companies?

I could write a program to combine suffix/prefix combos to common words like "mail", "net", "service", "video", "sound", "conference"

Then sue everyone 3 years afterwards?

The fact they never even bought a domain name for the service [or advertised it broadly] suggests they're not seriously impacted by Googles actions because it's their own ineptitude that crippled any chance of making it big.

Since a few months they changed the logo on the top left to a "Google Mail" logo, no longer "Gmail". So has a court ruled. See http://mail.google.com/mail/help/images/googlemail .gif [google.com]You can see that the domain serving the service is not gmail.com but mail.google.com.

So i think, this UK company has seen the success of this action in Germany and tries to profit in the same way.

Sincerelly, i don't really care how is it named, "Google Mail" makes more sense to me, even if i pronounce it as "geemail".

There's another instance of Gmail, too! Ghirardelli Chocolate [robert.to] has a Gmail service! As of two weeks ago, they were still calling it G-MAIL, and their use of the term goes back several years. I don't know if they've ever registered the trademark.

If you RTFA, you will see that the company is a small company, and was involved in communication with google over the span of 15 months or so, before jumping right into litigation. That sounds like the right thing to do, IMO, rather than just sue immediately. The company is a small one, and they say they don't have the big money that Google has to bring a law suit just to protect their name.

A careful review of the full article reveals that the company attempted to resolve this with Google out of the courts over 15 months ago. In the business world it is the responsibility of the newcomer, not the existing business, to conduct a name search when launching a new product or service, so as to avoide disputes like the one described here.
Google may have conducted such a search, but may have felt that its service was sufficiently unique so that its use of the name "Gmail" would not cause confusion

Gmail and G-mail are too similar to be separate trademarks. Fortunatly for Google, a trademark is only valid in a specific domain, and Google have never tried to trademark the term Gmail for a stupid mail-based service that no-one would want, so they should be safe.

'mail' is a generic term.
G is just a letter, devoid of any meaning beyond a possible abbreviation. In this case, it's a legitimate abbreviation for 'Google'. This reminds me of IBM trying to trademark the number 2 to stop vendors from making PS/2 compatible computers called "PC/2"
They lost.
Intel tried to trademark the number 386 & 486.
They also lost.
I'm not a google apologist or anything, but I think the litigants don't have a case

I have always been under the impression that from trademark disputes there need a few conditions regardless of the simililarity of the name:1. Serve the Same Market Segment2. Possible Confusionand perhaps

3. Intent to create confusion

A look at www.gmail.co.uk shows that this form of "Gmail" is only availible to those that sign up for this special Consentius program which is only availible on the coperate level (unless after 10 minutes I missed the a link or any info...)

A number of years ago, Walt Disney Corp sued the owners of West Edmonton Mall over trademark infringement. This is because Disneyland has a "Fantasy Land" section to their Anaheim location, and West Edmonton Mall had an indoor amusement park named "FantasyLand." The lawsuit was for $1. Disney won. The indoor amusement park is now called "GalaxyLand".

Meanwhile, West Edmonton Mall still has an attached hotel which is still called "FantasyLand Hotel".